Public Use Analysis Involves Consideration of Totality of the Circumstances

Author:Mr Jeffrey Woller
Profession:McDermott Will & Emery

The U.S. Court of Appeals for the Federal Circuit recently applied a "totality of the circumstances" analysis for evaluating a public use, differentiating the analysis from that used to evaluate an on-sale bar. Netscape Communications Corp. v. Konrad, Case No. 01-1455, 2002 U.S. App LEXIS 13840 (Fed. Cir. July 9, 2002).

Allan Konrad developed a system that allows a computer user to access and search a database residing on a remote computer. Konrad admitted that his invention was reduced to practice on or about September 26, 1990, when he successfully tested his invention with a Lawrence Berkeley Laboratory staff assistant. The patent issued as a continuation from Konrad's first application, which was filed on January 8, 1993, making the critical date for Konrad's public use and on sale activities January 8, 1992.

Three actions taken by Konrad in 1991 were held by the Federal Circuit to invalidate his patents. First, Konrad demonstrated his invention to two University of California computing personnel, without any obligation of confidentiality. Secondly, Konrad demonstrated his invention on a remote database maintained by the Stanford Linear Accelerator Center and allowed the use of his invention on the Stanford University database, again without any confidentiality agreement. Finally, Konrad offered to make his invention for a university laboratory in exchange for four months of employment, or no more than $48,000.

In accordance with the analysis mandated by Pfaff, the Federal Circuit evaluated Konrad's offer to sell his invention by determining whether "the invention is the subject of a commercial offer for sale, and is ready for...

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